USITC to investigate Philip Morris over e-cigarettes
The US International Trade Commission (ITC) will begin an investigation into certain Philip Morris tobacco heating articles, following a complaint from British American Tobacco (BAT).
Yesterday, May 12, the ITC announced that it would investigate tobacco companies Philip Morris and Altria Group for alleged patent infringement.
North Carolina-based RJ Reynolds Tobacco Company, which is owned by BAT, filed its complaint in early April, accusing the two companies of infringing US patent numbers 9,839,238; 9,901,123; and 9,930,915.
At the same time, RJ Reynolds filed a complaint at the US District for the Eastern District of Virginia, accusing the same companies of infringing the three patents at issue in the ITC investigation and two other patents.
Philip Morris’ IQOS, a heat-not-burn tobacco system, allegedly infringes the patents. IQOS, which includes an electrically powered smoking article that comprises an IQOS holder, a disposable tobacco stick, and a charger, is distributed by Altria in the US.
Tobacco heating products are devices that heat tobacco to generate a nicotine-containing aerosol with a tobacco taste which the user inhales. BAT’s own tobacco heating product is called Glo.
According to the claim, the defendants know of the patents, both because they regularly survey the patent literature—and especially that of their competitors—for relevant patents, and because they have cited the asserted patents during prosecution of their own patents. The Virginia lawsuit is ongoing.
At the ITC, The chief administrative law judge will assign the case to one of the ITC’s administrative law judges (ALJ), who will schedule and hold an evidentiary hearing. The ALJ will then make an initial determination, which is subject to review by the commission.
Alongside its ITC complaint, BAT argued that a limited exclusion order and a cease-and-desist order would serve the public interest and so the issue of public interest should be excluded from the investigation.
However, Philip Morris claimed that the requested remedies would have "impermissible, deleterious effects on the public interest”.
“Given the diverse number of devices needed to fulfil FDA’s plan, and the utter absence of effective, authorised substitutes within the category, denying 34.2 million American smokers access to IQOS would not serve the public interest,” said Philip Morris.
The US Food and Drug Administration’s (FDA) plan to help smokers quit combustible tobacco includes the availability of a wide range of less harmful alternatives to cigarettes.
Philip Morris added that denying IQOS access to those who already have switched could “send people back to combustible cigarettes (the most deadly form of tobacco use), which also would not serve the public interest”.
Other companies and organisations, including the American Conservative Union and the American Vaping Association, subsequently submitted their own statements on public interest.
The ITC, in its decision to investigate, concluded that it would take evidence from the parties and other interested persons with respect to the public interest and whether it precludes BAT’s request remedies.
Philip Morris has also filed three petitions for inter partes review at the Patent Trial and Appeal Board, requesting a review of the ‘123 patent and another two patents.
“In the district court and in the ITC, BAT has accused petitioner of infringing the ‘123 and other patents, even though the asserted claims recite conventional heat-not-burn features already in the public domain, including features in the expired Philip Morris patents asserted as prior art here,” said one of the petitions.
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